Wednesday, February 03, 2016

Empire down: Fox's series protected no matter how confused consumers are

Sometimes it’s nice to see the law work itself pure, as a
court clears out some plaintiff-postulated ambiguities in Rogers v. Grimaldi.Fox
produces Empire, a TV show following a
fictional entertainment industry family struggling for control of “Empire
Enterprises.” Music features heavily on the show; Fox partners with Columbia to
release the show’s songs, including a compilation for the season.These are sold in record stores and online.In connection with Empire, Fox also enters into contracts with artists, produces and
releases music, and promotes the artists and their music at radio stations and
live performances.

Defendant Empire Distribution is a record label, music
distributor, and publishing company founded in 2010.It produces and distributes urban, hip hop,
rap, and R&B music, and has released over 11,000 albums/singles, 6,000
music videos, and 85,000 songs, including multiple platinum and gold records
and works by famous artists such as T.I., Snoop Dogg, Kendrick Lamar, and
Gladys Knight.It uses the trademarks
“Empire,” “Empire Distribution,” “Empire Publishing,” and “Empire Recordings,” and
has some pending registration applications.

Unsurprisingly, Empire Distribution alleged that Empire caused affiliation
confusion.Fox brought a declaratory
judgment, and the court granted it summary judgment based on Rogers (which dealt with the federal
dilution and state claims as well).

The Ninth Circuit follows Rogers, protecting artistic works unless their use of a mark has no
artistic relevance to the underlying work whatsoever or, if there is artistic
relevance, the use is explicitly misleading about source or content.Sleekcraft’s
multifactor test didn’t apply, despite Fox’s extensive use of Empire.Moreover, contrary to what some past cases held, E.S.S. Entertainment
2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008), made clear
that there’s no threshold test of whether the plaintiff’s mark is a cultural
icon.The threshold test is “whether the
allegedly infringing use is contained in an expressive work.”[Pause for obligatory note: not including an
ad for a product, even though an ad is an expressive work.]

Artistic relevance: Um, yeah. The characters are “struggling
for literal control over an entertainment company called ‘Empire Enterprises,’ and
figurative control over the vast ‘empire’ that Lucious Lyon has built,” and it’s
set in New York, the Empire State.Empire Distribution argued that the use also had to be referential—that is,
it had to refer to the trademark owner to trigger Rogers.Some courts, mistakenly,
have agreed with this argument.Rogers simply requires that the junior
user didn’t arbitrarily choose to use the mark just to exploit its publicity
value. That doesn’t require the work to be “about” the trademark. A contrary
rule could chill a lot of protected speech; Empire Distribution’s argument was
essentially that “the common word ‘Empire’ cannot be used in an expressive work
unless it is referencing Empire Distribution.”

All that’s left is explicit misleadingness.As that prong of the test indicates, the
proper inquiry is whether there’s an “explicit indication, overt claim, or
explicit misstatement” as to the source of the work.Empire Distribution wanted to apply Sleekcraft, but then Rogers wouldn’t be a defense at all.Brown
v. EA made crystal clear that evidence of consumer reaction, as opposed to
evidence about what the user said,
was irrelevant to Rogers; Brown involved “strong consumer survey
evidence,” which the Ninth Circuit said was irrelevant:

Adding survey evidence changes
nothing. The [second prong of the Rogers]
test requires that the use be explicitly misleading to consumers. To be
relevant, evidence must relate to the nature of the behavior of the identifying
material’s user, not the impact of the use. Even if Brown could offer a survey
demonstrating that consumers of the Madden NFL series believed that Brown
endorsed the game, that would not support the claim that the use was explicitly
misleading to consumers.

“Thus, it is clear that no amount of evidence showing only
consumer confusion can satisfy the ‘explicitly misleading’ prong of the Rogers
test because such evidence goes only to the ‘impact of the use’ on a consumer.”

Also, I'm glad to get the chance to use a Sisters of Mercy reference again.

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